Vishnudas v. Vazir Sultan Tobacco: CHARMINAR Limited to Cigarettes

Citation & Court

Vishnudas Trading as Vishnudas v. The Vazir Sultan Tobacco Co. Ltd., Hyderabad and another, Supreme Court of India (G.N. Ray and G.B. Pattanaik JJ.), decided 9 July 1996; AIR 1996 SC 2275; (1997) 4 SCC 201

The Dispute

Vazir Sultan Tobacco registered CHARMINAR in 1942 and 1955 for 'manufactured tobacco' in class 34 but made only cigarettes. Vishnudas made quiwam and zarda, chewing-tobacco products, under CHARMINAR with a different device and applied to register it; on Vazir Sultan's objection, the Joint Registrar held in 1973 that the conflict with those registrations could not be waived. Vishnudas sought rectification under sections 46 and 56 of the 1958 Act for non-use on those goods. The Assistant Registrar limited the registrations to cigarettes in 1976, but the Madras High Court reversed him, holding that a class 34 entry could not be split. The question was whether that restriction was lawful.

What the Court Held

• Manufactured tobacco is a broad genus; cigarettes, quiwam, zarda and snuff are distinct goods, used differently and marketed separately.
• A trader who deals in only one or some articles under a broad class heading, with no bona fide intention to deal in the others, should not enjoy a monopoly over the whole class and block others from registering distinct goods.
• It is permissible, and proper, to register a mark for specific named articles within a class; the 1958 Act did not require registration for the whole class heading.
• The Assistant Registrar's order confining CHARMINAR to cigarettes was restored; the Court left open whether Vishnudas could register CHARMINAR for quiwam and zarda, and did not decide infringement or passing off.

How to Use This in a Rectification

Applicants blocked by an earlier mark registered for a wide class heading, or for goods its owner never sold, can cite it in a non-use or rectification application to cut the earlier specification down to the goods actually traded, and then press their own application. It also supports the argument, applied by the Supreme Court in Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation (2018), that an owner trading in only some goods should not monopolise distinct goods in the same class. Gather proof of what the earlier owner actually sells.

Important Limit

The non-use and rectification provisions are now sections 47 and 57 of the Trade Marks Act, 1999. Until it is rectified, a broad registration still operates across the class, as the Court itself noted, so an objection reply alone may not get past it. Restricting the earlier specification does not answer infringement or passing-off claims, which the Court left undecided.

Judgment Source

Read the judgment. For other cases on the same issue, see trademark case laws in India, by issue.